in the high court of the republic of …...element six technologies ltd v iia technologies pte ltd...

IN THE HIGH COURT OF THE REPUBLIC OF SINGAPORE

[2018] SGHCR 13

HC/S 26 of 2016HC/SUM 1654 of 2018

Between

Element Six Technologies Ltd… Plaintiff / Respondent

And

IIa Technologies Pte Ltd… Defendant / Applicant

JUDGMENT

[Civil Procedure – Discovery of Documents][Patents and Inventions – Experiments]

This judgment is subject to final editorial corrections approved by the court and/or redaction pursuant to the publisher’s duty in compliance with the law, for publication in LawNet and/or the Singapore Law Reports.

Element Six Technologies Ltdv

IIa Technologies Pte Ltd

[2018] SGHCR 13

High Court — Suit No 26 of 2016 (Summons No 1654 of 2018) Justin Yeo AR26, 27 June, 17 July 2018

27 August 2018 Judgment reserved.

Justin Yeo AR:

1 This judgment concerns the discovery of documents relating to

experiments and experimental material in the context of patent litigation. It also

touches on the area of legal professional privilege (referred to, in the rest of this

judgment, as “privilege”), given that such documents may often be privileged

from disclosure.

Background facts

2 The brief background to this suit was previously set out in Element Six

Technologies v IIa Technologies [2017] SGHCR 16. In essence, Element Six

Technologies Ltd (“the Plaintiff”) is the proprietor of two Singapore Patents

bearing the numbers 115872 (“the ‘872 Patent”) and 110508 (“the ‘508

Patent”). The ‘872 Patent is in respect of an optical quality synthetic single

crystal chemical vapour deposition (“CVD”) diamond material and the method

Element Six Technologies Ltd v IIa Technologies Pte Ltd [2018] SGHCR 13

for its production. The ‘508 Patent is in respect of a method of producing CVD

diamonds of a desired colour.

3 The Plaintiff brought the present suit against IIa Technologies Pte Ltd

(“the Defendant”), claiming that the Defendant had infringed 33 claims in the

‘872 Patent and 24 claims in the ‘508 Patent. The Plaintiff’s claim rests on four

trap purchased CVD diamonds (“the Samples”), each of which was allegedly

grown by the Defendant and trap purchased from Gemesis Diamond Company

(“Sample 1”), Microwave Enterprises Inc (“Sample 2”), Pure Grown Diamonds

(“Sample 3”) and the Defendant itself (“Sample 4”).

4 The defence comprises several levels. The Defendant has denied

knowledge of Samples 1 to 3 and called into question issues relating to the

provenance of those samples. The Defendant has also asserted that it has no

knowledge of whether the conditions or characteristics of all four Samples had

been changed after the Samples had allegedly left the Defendant’s possession

and custody. The Defendant has further contended that the Samples do not

infringe the asserted claims of the Patents. Finally, the Defendant has also

brought a counterclaim for the revocation of the Patents.

5 The Plaintiff has proceeded under the regime (“the Notice of

Experiments Regime”) in O 87A r 6 of the Rules of Court (Cap 322, R 5, 2014

Rev Ed) (“Rules of Court”). Under the Notice of Experiments Regime, a party

desiring to establish any fact by experimental proof has to serve on the other

party a notice stating the facts which it desires to so establish, giving full

particulars of the experiments proposed to establish those facts. It is trite that

the Notice of Experiments Regime is intended to ensure that a full and fair

2


analysis can be carried out by the parties on the matters sought to be proven by

way of the experiments described in the Notice of Experiments.

6 On 6 October 2016, the Plaintiff filed its list of documents, disclosing

technical notes describing the various experiments conducted on the Samples

(“the Technical Notes”). On 23 December 2016, the Plaintiff filed its Notice of

Experiments, containing 22 facts that the Plaintiff intended to prove by way of

experimental evidence. On 13 January 2017, the Defendant filed its response to

the Plaintiff’s Notice of Experiments, stating that it did not admit to any of the

22 facts.

The present application

7 On 28 March 2018, the Plaintiff applied by way of Summons No 1478

of 2018 (“SUM 1478”) for specific discovery of 13 classes of documents

pursuant to O 24 rr 1 and 5 of the Rules of Court, as well as electronic discovery

pursuant to Part V of the Supreme Court Practice Directions. On 9 April 2018,

the Defendant applied by way of Summons No 1654 of 2018 (“SUM 1654”) for

specific discovery of 12 classes of documents.

8 The two applications were scheduled to be heard together on the same

day. They were eventually heard over four days in June and July 2018 in the

light of the number of requests made and the complex factual substratum

relating to each request. About 400 pages of written submissions were tendered

to the court, together with voluminous bundles of authorities, affidavits and

other documents. On 27 August 2018, I rendered judgment for both

applications, with oral grounds of decision for SUM 1478 and seven of the 12

requests in SUM 1654. The remaining five requests in SUM 1654 relate to novel

3


points of law touching on the discovery of material relating to experiments (“the

Experiment Requests”), and are canvassed more fully in these written grounds.

9 The Experiment Requests are as follows:

[Request 2] All documents (including but not limited to reports, records, calibrations, written instructions, manuals) relating to any experimental procedures conducted on, machinery setup and/or test results (including the raw data) of, the [Samples] (regardless of whether the [Samples] had come into the Plaintiff’s possession or not);

[Request 3] All documents relating to the standards and/or benchmarks created as a result of any experiments, insofar as these standards and/or benchmarks were used by and/or referred to in the [Technical Notes] … All such standards and/or benchmarks referred to in the Technical Notes are described in Annex B [to SUM 1654].

[Request 4] All documents in their original format that provide the raw results and/or data for all tests performed on the [Samples] that were eventually relied on to prepare the Technical Notes, including but not limited to:-

i. The original format of the following documents that were disclosed by the Plaintiff on 21 March 2018:-

a. “05 NL530 4x A1.pdf” to “05 NL530 4x Z3.pdf”

b. “04 NL623-03 4x A1.pdf” to “04 NL625 4x C3.pdf”

c. “05 NL702 4x A1.pdf” to “05 NL702 4x D4.pdf”

d. “04 NL719-06 4x A1.pdf” to 04 NL719-06 4x D5.pdf”

ii. Coloured images captured by the Metripol system that have been converted into black and white images by the Plaintiff in the documents disclosed on 21 March 2018.

[Request 5] All documents relating to work-up experiments that were used and/or relied on and/or referred to in the Technical Notes;

[Request 6] All documents relating to any experiments that were conducted on the [Samples] that were subsequently abandoned and/or otherwise not relied on by the Plaintiff;

4


The law on discovery of experimental material

10 In relation to the Experiment Requests, the parties relied heavily on three

decisions of the UK Patents Court, taking very different positions on the ambit

of these decisions and the applicable legal principles to be gleaned therefrom.

The three decisions are Electrolux Northern Ltd v Black & Decker [1996] FSR

595 (“Electrolux”), Mayne Pharma Pty Ltd v Debiopharm SA [2006] FSR 37

(“Mayne Pharma”) and Magnesium Elektron Ltd v Neo Chemicals and Oxides

(Europe) Ltd [2017] EWHC 2957 (“Magnesium Elektron”). In gist:

(a) Defendant’s counsel contended that Mayne Pharma and

Magnesium Elektron were the operative cases representing the current

state of English law in relation to the disclosure of experiments and

experimental material in general, and that Mayne Pharma had

“overruled” Electrolux. Relying on Mayne Pharma and Magnesium

Elektron, Defendant’s counsel argued that disclosure ought to be given

for work-up experiments as well as experiments that were not expressly

referred to in the Plaintiff’s Notice of Experiments, whether or not these

experiments were “abandoned” by the Plaintiff.

(b) Plaintiff’s counsel argued that Mayne Pharma and Magnesium

Elektron applied only to the specific context of “work-up experiments”,

and that Electrolux continued to be operative in the context of

“abandoned experiments”.

11 It is useful to consider the three decisions in some detail, before setting

out my views on the applicable legal principles.

5


Electrolux

12 The first case to be considered is Electrolux. In Electrolux, each party

suggested that the other had carried out experiments which had not been

disclosed, and argued that the court should infer that those experiments had been

conducted, had proved helpful to the opposing party, and had been abandoned

for that reason.

13 Laddie J considered a fairly contemporaneous but unreported decision

of Jacob J in Honeywell Ltd v Appliance Components Ltd (February 22, 1996,

unreported) (“Honeywell”). In Honeywell, Jacob J expressed the view that it

could “hardly be right” for a party to suppress experiments that had been

conducted but which did not support (or perhaps even undermined or destroyed)

the arguments put forward by that party. As such, Jacob J inferred from a party’s

failure to put certain experiments in evidence that those experiments did not

support the position advanced by that party.

14 Laddie J differed from Jacob J’s views on this issue, for the following

reasons (Electrolux at 612–614):

(a) The litigation system proceeds on the basis that, save in relation

to discovery, each party puts forward the material which it believes

supports its case or undermines its opponent’s case, with such evidence

subject to testing by cross-examination at trial. No party is obliged to

call witnesses, whether factual or expert, who are hostile to his case.

Indeed, a party is not obliged to proffer evidence on any point, and may

instead opt to proceed through cross-examining his opponent’s

witnesses or relying on a favourable burden of proof.

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(b) In the context of patent claims, many experiments eventually fail

to support the propositions for which they were advanced. The reality is

that experiments are often abandoned for a variety of reasons, for

instance, because they were not clear enough, the experimental

technique was too open to attack, the expert who would give evidence

in relation to these experiments would make a dreadful witness, or

counsel had come to a view that there was a better and simpler way to

prove the point in question, etc. Indeed, experiments may also be

abandoned because they may – on initial impression – appear to support

an opponent’s case, and it would take a lot of complicated evidence to

disprove that initial impression. As such, it would be wrong for the court

to simply infer, from a party’s abandoning of experiments, that the

experiment was favourable to the opposing party.

(c) If a court would likely infer that an abandoned experiment

supported the opposing party’s case, the party from whom discovery is

sought would be “in a quite impossible position” (Electrolux at 614).

That party would have to disclose the experiments he intended to

abandon, and also set out the reasons for abandoning those experiments.

This may involve waiving privilege in relation to the advice of counsel

to abandon the experiment in question, and may also involve adducing

further evidence of experts (who may not otherwise be called) to explain

why the abandoned experiments were unnecessary and unhelpful to the

matter. The court would eventually be saddled with the additional

burden of considering whether there was a sensible and non-

incriminating reason for abandoning those experiments. Forcing a party

to disclose abandoned experiments would therefore result in parties

being driven to spend time and money on what would likely be an

7


irrelevant exercise, and would be “a step in the wrong direction” at a

time where the UK Patents Court was attempting to “slimline

proceedings and cut down on costs” (Electrolux at 614).

15 Laddie J also found it difficult to see why adverse inferences should be

drawn in the context of the non-disclosure of abandoned experiments, while

such inferences were not drawn in the context of a party interviewing experts

and choosing to retain some while abandoning the others. He concluded that it

could not be in the interests of the administration of justice “to force parties to

disclose all the other unfruitful avenues they have pursued on the off chance

that some might be arguably supportive of their opponent’s case” (Electrolux at

615).

16 Despite Laddie J’s disagreement with Jacob J’s views in Honeywell,

Laddie J observed that there was good reason for Jacob J to have come to the

conclusions that he did on the facts of Honeywell – in that case, there was a

direct experimental way of proving anticipation, but the infringer had opted

against putting such direct experiments into evidence, instead preferring to

adopt a “convoluted” route in proving anticipation (Electrolux at 615). In such

a situation, Jacob J’s drawing of an adverse inference was warranted. However,

this did not “justify the imposition of a general requirement on parties to

disclose abandoned experiments, or abandoned endeavours to find any other

form of evidence” (Electrolux at 615).

Mayne Pharma

17 About a decade after Electrolux, the UK Patents Court was faced with

an application for disclosure of documents relating to “any experiments which

may have been performed as part of the ‘work up’ or preliminary investigation

8


leading to the experiment forming the subject matter of a notice of experiments”

(Mayne Pharma at 658; referred to for convenience as “work-up experiments”).

18 The patents in Mayne Pharma related to a drug employed in the

treatment of colorectal cancer. One of the patents claimed a method of preparing

the drug, and an objection raised was that two pieces of prior art had already

disclosed processes which, if carried out, would inevitably fall within the claims

of the patent. This type of case is known in patent circles as the “inevitable

result” type of cases, in which the party applying to revoke the patent must show

that in following the instructions contained in the prior disclosure, the person

skilled in the art would inevitably come within the patent claims (Mayne

Pharma at 658, citing the decision of the House of Lords in SmithKline

Beecham Plc’s (Paroxetine Methanesulphonate) Patent [2006] RPC 10; [2006]

FSR 37).

19 Pumfrey J considered both Electrolux and Honeywell. He opined that

Laddie J’s suggested parallel between abandoned experiments and abandoned

experts (see [15] above) was “wide of the mark”, because of the difference

between experimental evidence and expert opinion evidence. The latter was in

the nature of an opinion and was subjective in nature, while the former was

“intended to provide a degree of objective confirmation or corroboration of the

subjective views of the experts” and would provide “a fixed point against which

the experts may themselves be assessed” (Mayne Pharma at 661). Pumfrey J

favoured the approach in Honeywell, observing that it “reflect[ed]s a need to

reveal the full story rather than just its culmination”. However, Pumfrey J

emphasised that his observations were made in the specific context of work-up

9


experiments, and that he “[did] not wish to be taken to be expressing a view in

any other context at all” (Mayne Pharma at 661).

20 Pumfrey J went on to consider the dimension of privilege in relation to

the disclosure of work-up experiments, observing that neither Honeywell nor

Electrolux dealt with this issue. Citing Nea Karteria Maritime Co Ltd v Atlantic

& Great Lake Steamship Corp and Cape Breton Development Corp (No 2)

[1981] Com LR 138 (“Nea Karteria”), Pumfrey J concluded that the service of

the Notice of Experiments amounted to a waiver of privilege, and that such

waiver would extend to work-up experiments (Mayne Pharma at 662). Pumfrey

J expressed doubt over whether such a waiver of privilege would extend beyond

work-up experiments, but opted against expressing further views on this issue.

On the facts of Mayne Pharma, Pumfrey J declared that any privilege otherwise

attaching to documents relating to the work-up experiments in question was

waived by the service of the Notice of Experiments.

Magnesium Elektron

21 The most recent decision of the trio – Magnesium Elektron – was

decided in late 2017. In Magnesium Elektron, the plaintiff alleged that the

defendants had infringed its patent in relation to processes for producing rare-

earth mixed oxides. The plaintiff had adduced experimental evidence that the

defendant’s products were infringing. Tests had been done on third party

products prior to the undertaking of the experiments in question, for the purpose

of comparing the third party products with the samples produced by the plaintiff.

The defendant requested for material relating to the tests conducted on the third

party products.

10


22 Daniel Alexander QC (sitting as a Deputy Judge of the High Court)

referred to an earlier case management conference for the matter, in which Birss

J considered whether the plaintiff ought to disclose work-up experiments in

view of the privilege attaching to them (see Magnesium Elektron Ltd v

Molycorp Chemicals & Oxides (Europe) Ltd [2017] EWHC 1024 (Pat)

(“Magnesium Elektron (CMC)”)). Birss J ordered disclosure along the lines of

that in Mayne Pharma (“Mayne Pharma disclosure”). Birss J recognised that

Mayne Pharma was an “inevitable result” case, but held that the principles in

relation to the disclosure of work-up experiments were not limited to “inevitable

result” cases (Magnesium Elektron (CMC) at [19] and [22]).

23 Alexander QC opined that Magnesium Elektron (CMC) concerned the

“macro” question of whether Mayne Pharma disclosure should be given in cases

other than the “inevitable result” cases; in contrast, the issue before Alexander

QC concerned the “micro” question of precisely what further disclosure was

required having regard to the material which had been provided (Magnesium

Elektron at [34]). Against this backdrop, Alexander QC observed that

Honeywell and Electrolux were not of complete assistance to Pumfrey J in

Mayne Pharma, because Honeywell and Electrolux were concerned with very

different factual contexts – specifically, they were concerned with “different

experiments which had not been deployed by the party concerned” or

“abandoned” experiments, rather than work-up experiments. Furthermore,

neither Honeywell nor Electrolux had dealt with the dimension of privilege (see

[20] above).

24 On the issue of the waiver of privilege, Alexander QC examined a series

of authorities and concluded that the law operated an element of consequential

procedural control following the deployment of a document (for instance, the

11


service of the Notice of Experiments), where the scope of waiver was a function

of the contents of the document and the nature of its deployment (Magnesium

Elektron at [38]–[60]). He emphasised that Nea Karteria and authorities

subsequent to it had taken a sophisticated approach to implied waiver which

depended, not merely on fact that a document has been deployed, but also on

the express and implied representations made by the act of its deployment

(Magnesium Elektron at [58]).

25 Against this backdrop, Alexander QC held that Mayne Pharma

disclosure did not extend beyond “materials recording preliminary investigation

leading to the particular experiment which is deployed in evidence”, and did not

extend to “other parts of an overall experimental programme even if the design

of the experiment in question may have drawn on earlier experiments”

(Magnesium Elektron at [90]). He acknowledged that there was often no

uncontroversial way of treating one part of an experimental programme as being

completely separable from another, given that some aspects may involve

deciding what experiments to undertake, others involve undertaking the

experiments themselves, and yet others involve interpreting the results

(Magnesium Elektron at [91]). However, he observed that were two types of

cases in which Mayne Pharma disclosure would be clearly and easily

applicable, namely (Magnesium Elektron at [92]–[96]):

(a) First, the “inevitable result” cases. In such cases, the argument is

that certain types of experiments would inevitably be selected and

undertaken in a certain manner, and that those experiments would

inevitably engender certain results. In view of the nature of such cases,

information ought to be provided in relation to how the experiments

12


were selected and conducted, and the manner in which they were carried

out. This was, in fact, the very basis for the decision in Mayne Pharma.

(b) Second, the “completeness of data” cases. In such cases, the

issue is whether an experiment is repeatable or exhibits significant

variation in result. Having a partial view of the data may lead to

unfairness, and as such, a Court may not permit a party to deploy only

the test runs that support its case.

26 Beyond these two types of cases, other cases may be less

straightforward, and a “more cautious and focused approach” would be required

in determining issues relating to the waiver of privilege and the scope of

disclosure (Magnesium Elektron at [98] and [109]). In Alexander QC’s view,

there should not be an “implied” or “consequential” waiver of privilege over

“precursor or surrounding material” simply on the basis that the experiments

had been disclosed, even if it may be possible to find answers to the deployed

experiments “by rummaging around in earlier material” (Magnesium Elektron

at [98]). He emphasised that there was no warrant for “broad and general

disclosure of all information about earlier experiments on which the

experiments in question may have been based if a later experiment is deployed”

(Magnesium Elektron at [109]). He further opined that waiver of privilege in

“material not deployed” should only be treated as having taken place “to a

limited additional extent”, and only in so far as necessary to satisfy the specific

objectives of the law relating to waiver as set out in Nea Karteria (Magnesium

Elektron at [109]).

27 On the facts of Magnesium Elektron itself, Alexander QC recognised

that the request for documents relating to the tests on the third party products

13


may have included documents that provided some explanation on why the

particular experimental evidence in question was adduced by the Plaintiff.

However, after considering the principles relating to waiver of privilege, and in

particular the “restrictive approach to waiver in the general law and in Mayne

Pharma”, Alexander QC concluded that privilege had not been impliedly

waived, and found that it would not be unfair for the plaintiff to withhold

disclosure of the precursor experiments (Magnesium Elektron at [123]). He also

found that further disclosure would be neither necessary nor proportionate,

given the likely costs involved and the value to be gained from the disclosure of

such material (Magnesium Elektron at [126]).

The applicable legal principles

28 In the absence of local jurisprudence relating directly to the discovery

of experiments and experimental material, the three UK Patent Court decisions

provide useful guidance. Indeed, the fact that paragraph 7.1 of Practice

Direction 63 of the UK Civil Procedure Rules is in pari materia with O 87 A r

6 of the Rules of Court further enhances the persuasiveness of these English

decisions.

29 It has been observed that there is a “perennial tension” in the common

law discovery process, brought about by the attempt to achieve both justice and

efficiency (see Breezeway Overseas Ltd and another v UBS AG and others

[2012] 4 SLR 1035 (“Breezeway”) at [20]). A particular instantiation of this

tension surfaces in patent litigation when discovery is sought for documents

relating to experiments. Experimental evidence may have significant probative

value at trial, and may even be accorded greater weight than the opinions of an

expert witness (see [19] above). It is therefore unsurprising that there is a

tendency for parties to indulge in “seemingly endless request[s] for the

14


absolutely complete picture”, even where there is limited reason to suppose that

there is anything of real relevance to be found in the material that has yet to be

disclosed (Magnesium Elektron at [113]). Put another way, there is a tendency

for parties to seek over-disclosure of documents relating to experiments, with

the discovery sought burgeoning beyond all proportion to the case at hand. This

quest for “full information” and “perfect justice” is one that may ironically

defeat justice itself (see, eg, Breezeway at [20] and Nichia Corp v Argos Ltd

[2007] EWCA Civ 741 at [51]).

30 A judicious balance therefore has to be struck in the discovery of

documents relating to experiments. On the one hand, it is critical to ensure that

a party has a fair opportunity to understand, consider and question the

experiments conducted by his opponent. On the other hand, it is just as critical

to ensure that his opponent is not put through an unnecessary, disproportionate

and oppressive discovery process, or unfairly deprived of the protection

accorded by the law of privilege. Beyond this broad calculus, it may be difficult

to find a formulaic answer that would ensure that a proper balance is struck in

every case. The difficulty in finding the right balance is exacerbated by the fact

that the principles relating to discovery and privilege operate on different legal

and conceptual planes. While both are important elements that facilitate the fair

administration of justice, they address different concerns: the former seeks

adequate disclosure to enhance the rectitude of judicial decision-making,

whereas the latter safeguards the necessary conditions for effective legal

representation (see, eg, Skandinaviska Enskilda Banken AB (Publ), Singapore

Branch v Asia Pacific Breweries (Singapore) Pte Ltd and other appeals [2007]

2 SLR(R) 367 at [23]–[25]).

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Work-up experiments

31 I now return to the trio of UK Patents Court decisions. In my view,

Mayne Pharma disclosure applies specifically in the context of work-up

experiments, and most clearly so in the “inevitable result” and “completeness of

data” types of cases. The reasons for singling out these types of cases have been

amply expounded upon by Alexander QC in Magnesium Elektron (see [25]

above). The very nature of these types of cases supports the view that there

should be disclosure of the material in question, as well as the “implied” or

“consequential” waiver of privilege over such material. It is precisely in these

types of cases that Mayne Pharma disclosure would likely achieve the balance

mentioned at [30] above.

32 However, for cases falling outside these two types of cases, it is unclear

whether the balance will be appropriately struck through an order for Mayne

Pharma disclosure. A court should not be quick to assume that every request

for the discovery of work-up experiments ought to be granted as a matter of

course. Much will depend on the specific factual matrix of the case at hand; and

in this regard, Alexander QC’s call for a “more cautious and focused approach”

is a salutary one. In examining such requests, the court has to carefully guard

against the risk of making an order resulting in over-disclosure or an

unjustifiable encroachment on the protection afforded by the law of privilege.

Abandoned experiments

33 In relation to abandoned experiments, I do not think that Electrolux has

been “overruled” by Mayne Pharma. While Pumfrey J expressed a preference

for the views of Jacob J in Honeywell (contra the views of Laddie J in

Electrolux), he expressly limited his views to the specific context of Mayne

16


Pharma, viz, work-up experiments (see [19] above). Furthermore, it is at least

implicit from Mayne Pharma, and more expressly recognised in Magnesium

Elektron, that the considerations in the context of work-up experiments may be

different from those in other experiments. Indeed, even within the context of

work-up experiments, Alexander QC observed that Mayne Pharma’s approach

was to be read restrictively, and would only be clearly applicable in certain types

of cases (see [25]–[26] above).

34 I would further observe that, in the context of abandoned experiments,

the concerns expressed by Laddie J remain compelling and firmly anchored

upon the well-established discovery principles of relevance and necessity. It

ought to be remembered that O 24 rr 1(2)(b) and 5(3)(b) of the Rules of Court

only compel a party to give discovery of documents which could adversely

affect his own case, adversely affect another party’s case, or support another

party’s case. In most situations, arguments for the discovery of abandoned

experiments would centre on the first or third categories (viz, that such

experiments may adversely affect a party’s own case, or support another party’s

case). However, as Laddie J pointed out, there are various possible reasons for

which experiments may be abandoned – for instance, the lack of clarity of the

experiment, the openness of the experiment to attack, the complexity involved

in explaining the experiment, etc (see [14(b)] above). Many of these reasons

may have nothing to do with adversely affecting a party’s own case, or

supporting another party’s case; or, in other words, documents relating to the

abandoned experiments may be irrelevant for the purposes of discovery.

Furthermore, even if O 24 rr 1(2)(b) or 5(3)(b) of the Rules of Court is satisfied

in relation to certain abandoned experiments, it must still be shown that such

discovery is necessary for the purposes of O 24 r 7 of the Rules of Court.

17


35 It is also important to consider the dimension of privilege in the context

of abandoned experiments. This had not been dealt with in Honeywell and

Electrolux (see [20] and [23] above), although it ought to be noted that the need

to waive privilege appeared to be a factor motivating Laddie J’s decision against

ordering the disclosure of abandoned experiments (see [14(c)] above). I would

also reiterate the limited approach to the waiver of privilege in relation to

material that has not been deployed (see [26] above). In the absence of any

detailed submissions by the parties on the waiver of privilege in relation to

abandoned experiments, and in view of my decision in relation to Request 6 (at

[59]–[61] below), I limit my observations to the following. The waiver of

privilege ought to be approached more restrictively in the context of abandoned

experiments than in the context of work-up experiments. Unlike work-up

experiments which (by their very nature) relate directly to material that has been

deployed (viz, the experiments that are the subject of the Notice of

Experiments), abandoned experiments may have no direct relation to deployed

material.

Decision on the Experiment Requests

36 I turn now to address each of the five Experiment Requests.

Request 2

37 Request 2 seeks all documents relating to any experimental procedures

conducted on, machinery setup or test results of the Samples, whether or not the

Samples had come into the Plaintiff’s possession.

38 Defendant’s counsel acknowledged that Request 2 was broad, but

argued that it should be allowed. This was because the Technical Notes were

18


mere summaries of the experiments conducted, and were written by the

Plaintiff’s employees who must have had access to, or had sight of, the original

and contemporaneous reports of experiments conducted by the scientists as well

as the raw data of any in-house experiments. As such, the Defendant required

all the base material sought in Request 2 in order to develop a complete

understanding of the experiments that were conducted. In terms of specifics,

Defendant’s counsel pointed to documents relating to the calibration of the

machinery used in the conduct of experiments disclosed in the Plaintiff’s Notice

of Experiments. Defendant’s counsel contended that it was insufficient for the

Plaintiff to merely exhibit instrument manuals explaining the steps to be taken

for calibration; instead, the Defendant required documents setting out the actual

calibration of the machines by the person conducting the experiments.

39 Plaintiff’s counsel raised two main contentions in resisting Request 2:

(a) First, the Notice of Experiments Regime allowed the opposing

party to be apprised of the experiments, and to decide how best to

respond. If the Defendant wished to object to the conduct of experiments

in the Notice of Experiments, then the Defendant ought to have

requested for a repeat of those experiments, failing which, it ought to be

precluded from challenging the conduct of the experiments (although it

would remain open for the Defendant to object to the experiments on

other grounds such as the fact that the experiments chosen were

inappropriate to measure the characteristic in question).

(b) Second, Request 2 was overly broad. In particular, Request 2 was

not limited to work-up experiments (which are the subject matter of

Request 5), and extended instead to documents relating to all

19


experiments, whether or not these documents have come within the

Plaintiff’s possession.

40 In relation to Plaintiff’s counsel’s first contention, it ought to be noted

that the repetition of experiments is neither mandated, nor the only way an

opposing party can challenge an experiment at trial. As recognised in

Magnesium Elektron, even under the Notice of Experiments Regime, a party

may reasonably decide not to request a repeat of experiments, and choose

instead to criticise an experiment for not being sufficiently validated or

probative (Magnesium Elektron at [78]). In the present case, this is precisely

what the Defendant has opted to do. It should also be kept in mind that the

parties had previously unsuccessfully attempted to come to an agreement on a

protocol for experiments to be conducted on neutral samples, and the Plaintiff

had in fact withdrawn its application for the neutral samples. In the

circumstances, it does not appear practical to pursue the option of repeating the

experiments in the present case.

41 However, I agree with Plaintiff’s counsel’s second contention that

Request 2 is overly broad ranging. Indeed, Request 2 appears to entirely

subsume Requests 3 to 6. While Defendant’s counsel has strenuously argued

that all experimental material relating to the Samples would be essential for the

trial, this appears – without more – to be an unjustifiable and disproportionate

attempt to leave no stone unturned.

42 There is, however, one limited aspect for which the Defendant has

provided sufficient justification to warrant further discovery. This is as regards

the documents concerning the actual calibration of the equipment in the

conduct of the experiments. While the Plaintiff has disclosed several instruction

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manuals on calibration and has stated on affidavit that some of the calibrations

were done by a “reputable third party” (such as Laser Zentrum Hannover or the

University of Warwick), these explanations did not provide any insight as to the

actual calibration of the equipment for the purposes of the experiments in the

Notice of Experiments. Any errors in calibration may well produce inaccurate

data, which could result in the Samples being incorrectly found to exhibit

infringing characteristics. In fairness, the Plaintiff ought to disclose these

calibrations.

43 As such, I grant Request 2, limited only to documents relating to the

actual calibration done for the experiments described in the Plaintiff’s Notice of

Experiments.

Request 3

44 Request 3 seeks all documents relating to the standards or benchmarks

created as a result of any experiments, insofar as these standards or benchmarks

were used by or referred to in the Technical Notes.

45 Defendant’s counsel contended that Request 3 should be allowed

because the standards or benchmarks relied upon by the Plaintiff in its

experiments were not industry standard references. In Defendant’s counsel’s

view, a non-infringing sample may be wrongly considered to be infringing, if

the wrong standards or benchmarks were used, or if these the standards or

benchmarks were used inappropriately. As the Plaintiff intended to rely

exclusively on the Technical Notes as proof that the Samples infringed the

Patents, the Defendant required all base material that the Plaintiff’s employees

had relied upon in preparation of the Technical Notes.

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46 Plaintiff’s counsel pointed out that the Plaintiff had already provided

explanations and responses to each standard or benchmark by way of affidavit

evidence. The standards or benchmarks may be categorised into two groups, as

follows:

(a) First, where the Technical Reports have already disclosed the

relevant information on the specified standard or benchmark. The

Defendant has not explained why additional documents were required

given that the relevant information was already found in the Technical

Reports.

(b) Second, where the Plaintiff has already disclosed additional

documents in the affidavit filed to resist SUM 1654, relating to the

specified standards or benchmarks in question. For instance, the Plaintiff

has stated in that affidavit where the relevant information may be found,

and exhibited the relevant information as well.

47 The Plaintiff has further averred on affidavit that the evidence provided

was sufficient for a skilled person to understand the nature of the identified

standards or benchmarks, and how these were used to support the conclusions

advanced in the Technical Reports.

48 The Defendant’s response was that the information has been

“reproduced in the abstract and without context”, and as such the Defendant still

required “all documents relating to these standards and/or benchmarks”.1

However, the Defendant did not go further to give examples of the alleged

inability to understand the explanations given, or to pinpoint what issue-specific

1 27th Affidavit of Mehta Vishal Jatin (dated 25 May 2018) at paragraph 33.

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information it was seeking. Instead, Request 3 is a generally-worded request for

further documents on benchmarks and standards. This would not be sufficient

to justify an order for further discovery, given that the Plaintiff has already

provided affidavit explanations for each standard or benchmark identified. In

the circumstances, I see no basis for Request 3, and therefore disallow the

request.

Request 4

49 Request 4 contains two separate sub-requests relating to information

captured by the Metripol system.

Request 4(i) – data presented in PDF file

50 Request 4(i) seeks raw data documents on measurements taken by the

Metripol system in relation to the Samples. Defendant’s counsel contended that

this request should be allowed because the Plaintiff had disclosed “rows and

rows of data” that would originally have been in a 1025 x 1361 spreadsheet, but

in the form of a PDF file in A4 size. The columns and rows of the spreadsheet

had therefore been broken into different sections, causing the data to be

“truncated and undecipherable”. The Plaintiff had explained that the conversion

of the information into a PDF file was intended to make it “easier to review”

and “exhibit in affidavits”. The Plaintiff had also provided an affidavit

explanation on how the Defendant may use the information contained in the

PDF file to ascertain the requisite values for specified pixels.

51 In my view, the conversion of data to the PDF file has rendered the data

impossible to review. Even with the explanation provided by the Plaintiff in

relation to ascertaining the requisite value for specified pixels, the proffered

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approach would be unworkable in practice because the explanation allowed

only for obtaining the value for a single specified pixel. It would be impractical

for the Defendant to use this approach in analysing the selected area, which

involves upwards of a million pixels. While the Plaintiff has claimed that the

Defendant would require specialised software to view the data in its original

format, this would not be a reason for withholding discovery of the data in

usable form. I therefore grant Request 4(i).

Request 4(ii) – coloured raw images of the Samples

52 Request 4(ii) seeks coloured raw images of the Samples that were

captured by the Metripol system. The Defendant’s main basis for this request is

that a comparison of two images of Sample 2 revealed that the images were

slightly different. In the Defendant’s view, there were only two possible

explanations for the difference: either the images were converted from coloured

images to greyscale images, or the images were taken by different Metripol

measurements.

53 The Plaintiff’s affidavit evidence is that while the Metripol system is

capable of exporting the images either in coloured format or in black and white,

the Plaintiff had only received black and white versions of the images from the

University of Warwick. Furthermore, in relation to the difference in the two

images, the explanation provided in the Plaintiff’s submissions is that both

images of Sample 2 were of the same sample and of the same data, albeit

displayed in different ways.

54 I disallow Request 4(ii) in view that the Plaintiff had already disclosed

the images which it had received and relied upon, and also in view of the

explanation given as to the differences between the two images of Sample 2.

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However, I order that the Plaintiff furnish the explanation on the differences

between the two images by way of an affidavit, as the explanation is currently

to be found only in the Plaintiff’s submissions.

Request 5

55 Request 5 seeks all documents relating to work-up experiments that

were used by, relied on or referred to in the Technical Notes. Mayne Pharma

and Magnesium Elektron are particularly relevant to this request.

56 Defendant’s counsel acknowledged that the Plaintiff had stated on

affidavit that there were “no other work-up experiments”2 apart from those

already disclosed in the Technical Notes. However, Defendant’s counsel

contended that this was a misleading averment, because the Plaintiff actually

meant that the work-up experiments were “mentioned” (contra “disclosed”) in

the Technical Notes, and such mere “mention” was inadequate for the

Defendant to understand the work-up experiments in question. Defendant’s

counsel argued that without disclosure of the preparatory or intermediary steps,

the Defendant would not have a full understanding of the experiments

conducted by the Plaintiff, and would not be able to prepare its evidence against

the Plaintiff’s claim of infringement. As such, on the authority of Mayne

Pharma and Magnesium Elektron, the Defendant sought the discovery of all

documents relating to the work-up experiments.

57 Plaintiff’s counsel raised two arguments:

2 15th affidavit of Susan Jane Fletcher Watts (dated 30 April 2018) at paragraph 80.

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(a) First, the Technical Reports were detailed documents that

discussed the various experimental procedures and results in relation to

the Samples. Given that the Plaintiff had averred on affidavit that all the

work-up experiments were already discussed in the Technical Reports,

the Plaintiff had prima facie fulfilled its Mayne Pharma disclosure

obligations.

(b) Second, the present case falls outside the types of cases for which

Mayne Pharma disclosure is more easily and clearly applicable. In this

regard, it is insufficient for the Defendant to simply argue that because

the Plaintiff had filed the Notice of Experiments, the Plaintiff must give

discovery of all work-up experiments. Instead, the Defendant must show

that the work-up experiments constitute the necessary context within

which the experiments in the Notice of Experiments are to be assessed,

without which there will be a misunderstanding or misconstruing of the

experiments in the Notice of Experiments.

58 The deployment of a document (such as the Notice of Experiments) does

not, in and of itself, “automatically open a floodgate to a wide destruction of

privilege” (Magnesium Elektron at [47]). Thus far, the Defendant has merely

made sweeping statements that it would be prejudiced in its preparation for trial

if Request 5 is not granted, without demonstrating with any specificity as to why

the documents sought are relevant and necessary for the Defendant to

understand the experiments in the Plaintiff’s Notice of Experiments. In this

regard, it ought to be noted that none of the cases cited to me support an order

for specific discovery of work-up experiments being made simply on the back

of a sweeping averment that more information is needed. Without cogent and

specific reasons for the discovery sought, and without compelling arguments on

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why privilege ought to be waived in relation to these documents, I do not think

that the balance (see [30] above) would be achieved by ordering the discovery

of documents in Request 5. This is so, notwithstanding the fact that Request 5

specifically relates to work-up experiments. I therefore disallow Request 5.

Request 6

59 Request 6 seeks all documents relating to abandoned experiments that

were conducted on the Samples. Defendant’s counsel clarified by way of oral

submissions that Request 6 related to documents which fall outside of Request

5, and that these documents have nothing to do with the Technical Notes.

60 In relation to Request 6, Defendant’s counsel argued that the Plaintiff

ought to disclose all abandoned experiments regardless of the reasons for

abandonment. In Defendant’s counsel’s view, it was insufficient for the Plaintiff

to aver that it did not abandon any experiments “simply because the results were

undesirable”.3

61 The legal principles relating to abandoned experiments has been

discussed at [33]–[35] above. In relation to Request 6, the Plaintiff has filed an

affidavit averring that no experiment had been abandoned simply because the

experiments engendered results undesirable to the Plaintiff. The Defendant has

not provided any compelling reason to cast doubt on this averment, and has

instead simply argued that it wished to have sight of all abandoned experiments,

regardless of the reasons for which the experiments were abandoned. Such a

broad and sweeping argument provides little basis for determining that Request

6 is relevant and necessary. It is also a request for the discovery of documents

3 15th affidavit of Susan Jane Fletcher Watts (dated 30 April 2018) at paragraph 83.

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which may be protected by privilege, without good justification for why

privilege ought to be waived in the circumstances of the present case. I therefore

disallow Request 6.

Conclusion

62 For the foregoing reasons, I grant Request 2 (limited only to documents

relating to the actual calibration done for the experiments described in the

Plaintiff’s Notice of Experiments) and Request 4(i). I disallow Request 4(ii),

but order that the Plaintiff furnish an explanation on affidavit in relation to the

reasons for the difference between the two images of Sample 2. I disallow

Requests 3, 5 and 6 in their entirety.

63 In closing, I echo the observation in Magnesium Elektron that – at least

in relation to the discovery of experiments and experimental material in the

context of patent litigation – there is much value to be found in requiring parties

to seek “issue-specific information”, rather than engaging in interlocutory

battles seeking the specific discovery of broad classes of documents. This is

particularly so in patent disputes (such as the present) which involve a massive

and complex universe of information relating to experiments and experimental

material. In such cases, a movement towards the seeking and provision of

“issue-specific information” may well present the surest step towards achieving

a judicious balance: between a party’s ability to understand, consider and

question his opponent’s experiments on the one hand, and the burden placed

upon his opponent to give discovery of (privileged) material on the other.

64 The present case provides some illustrations of the importance of

specificity in seeking information, particularly in relation to the limited granting

of Request 2 (see [43]–[44] above) and the rejection of Requests 3 and 5 (see

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[48] and [58] above). Had the requests for further discovery been more focused

and targeted at specific issues, the Defendant may have had a more compelling

case for further discovery to be ordered.

65 I will hear parties on costs.

Justin YeoAssistant Registrar

Mr Jason Chan, Mr Melvin Pang and Mr Nicholas Ong (Amica Law LLC) for the Plaintiff;

Mr Tony Yeo, Ms Meryl Koh and Mr Javier Yeo (Drew & Napier LLC) for the Defendant.

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